The use of the mark 'SUPER POSTMAN' by defendants was found to infringe the plaintiff's rights in the 'POSTMAN' mark due to deceptive similarity and ongoing goodwill of the plaintiff's trademark despite a hiatus in use.

JUDGMENT

TEJAS KARIA, J

FACTUAL BACKGROUND:

1. This Suit is filed seeking permanent injunction restraining infringement of Trade Mark ‘POSTMAN’ of Plaintiff No. 1, passing off, damages, rendition of accounts, delivery up, costs etc. The Suit was originally filed by Plaintiff No. 2 in his capacity as the Court Receiver of Plaintiff No.1, a partnership firm being M/s Ahmed Oomerbhoy, vide order dated 06.07.2000 in Suit No. 4913 of 2000 titled as Majid A. Oomerbhoy v.Rashid S. Oomerbhoy & Ors. by the High Court of Judicature at Bombay.

2. Vide order dated 30.07.2001, Plaintiff No. 2 was further directed by the High Court of Judicature at Bombay to take steps that may be necessary to safeguard the Trade Mark of Plaintiff No. 1 and also take action against the persons who may be unauthorizedly using the Trade Mark of Plaintiff No. 1, ‘POSTMAN’.

3. It is contended by the Plaintiffs that Trade Mark ‘POSTMAN’ is a completely arbitrary word chosen as a Trade Mark in respect of refined groundnut oil (edible) by Plaintiff No. 1. The Trade Mark of Plaintiff No. 1 was duly registered and exclusively belongs to Plaintiff No. 1. The details of registration of Trade Mark ‘POSTMAN’ in respect of refined groundnut oil (edible) in Class 29 in India are as under:

Mark Regn. No. Date Device of a ‘Postman’ 162666 February 19, 1950 Device of a ‘postman’ 213353 January 18, 1963 and words POSTMAN brand Device of a ‘postman’ 258918 August 21, 1969 and words POSTMAN brand Device of a ‘postman’ 260538 November 12, 1969 and words POSTMAN brand Trademark postman 312898 March 4, 1976 Device of a ‘postman’ 415564 January 4, 1984 and words POSTMAN brand

4. The above registrations have been duly renewed from time to time and were in force at the time of filing of the Suit. The Trade Mark ‘POSTMAN’ is also registered in UAE (Dubai) and United Kingdom.

5. Plaintiff No. 1 has also registered the ‘POSTMAN’ Label variants, each of which are original artistic works and registered with Registrar of Copyrights as under:

6. Plaintiff No. 1 has also registered the shape and design of its products with the Controller General of Patents and Designs vide Design Registration No. 160845 with effect from 29.03.1989, which expired in 2004. However, the shape of the ‘POSTMAN’ groundnut oil bottle had become so distinctive that till date, the consumer associates the same with Plaintiff No. 1’s product or as originating from a specific source.

7. Plaintiff No. 1’s product under the Trade Mark ‘POSTMAN’ has been in regular household use for over five decades and the said Trade Mark ‘POSTMAN’ is exclusively and strongly identified in the minds of the consumers and by the members of the trade as the product of Plaintiff No. 1.

8. The Trade Mark and Device of ‘POSTMAN’ have acquired substantial reputation and goodwill in the market since 1930s, having registrations since 1954. Plaintiff No. 1 had been using the Trade Mark ‘POSTMAN’ continuously and exte